WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Levantur, S.A. v. Media Insight A/K/A Media Insights Case No. D2010-0623 1. The Parties
The Complainant is Levantur, S.A. of Palma de Mallorca, Spain, represented by Landwell-PricewaterhouseCoopers, Spain.
The Respondent is Media Insight also known as Media Insights of Miami Beach, Florida, United States of America, represented by Gaebe, Mullen, Antonelli, Esco & Dimatteo, United States of America. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , and are registered with Melbourne IT Ltd. The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2010. The Complaint was accepted by the Center on a provisional basis only with respect to the disputed domain name , subject to Panel assessment on a question of re-filing (discussed further below). On April 21, 2010, the Center transmitted by email to Melbourne IT Ltd and Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On April 21, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 23, 2010, Melbourne IT Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2010 providing the registrant and contact information disclosed by the Registrar, notifying the Complainant that the Complaint was administratively deficient, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on April 23, 2010. In response to a notification by the Center that the first amended Complaint was administratively deficient, the Complainant filed a second amended Complaint on April 27, 2010. The Center verified that the Complaint and amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2010. That notification noted that the proceedings were being commenced subject to a determination being made by a duly appointed Panel on the issue of re-filing as regards the disputed domain name . In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2010. The Response was filed with the Center on May 19, 2010.
The Center appointed John Swinson as the sole panelist in this matter on May 27, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a Spanish corporation which is part of the Piñero Group, one of the leading companies in the Spanish tourist industry. The Complainant operates luxury hotels in Spain, Portugal, Mexico and the Dominican Republic. The names of several of its hotels begin with the expression Gran Bahía Príncipe. The names are completed by the addition of the location of the relevant hotel.
The Complainant owns registered trademarks in Spain and the United States for the name BAHIA PRINCIPE CLUBS & RESORTS in Class 42. The Spanish trademark is valid from August 20, 1998 and the United States trademark is valid from June 24, 2003.
The Complainant owns registered Community trademarks:
- BAHIA PRINCIPE CLUBS & RESORTS and design in classes 16, 36 and 43 valid from April 25, 2008; and
- BAHIA PRINCIPE RESIDENTIAL GOLF RESORT and design in classes 16, 36 and 41 valid from July 31, 2008.
The Complainant has also registered numerous domain names consisting of or including the words “bahia principe”. The Complainant has advertised widely its hotel and travel services in various media. The expression “bahia principe” is used extensively in that advertising.
According to WhoIs searches, the disputed domain names were registered by the Respondent on the following dates:
- on November 17, 2007;
- on September 22, 2005;
- on October 31, 2007;
- on June 24, 2005;
- on June 24, 2005;
- on July 26, 2005;
- on June 24, 2005;
- on July 26, 2005;
- on January 4, 2006;
- on April 13, 2005.
The disputed domain names point to websites which offers hotel services, including services offered by companies which compete with the Complainant.
George Alvarez, who according to his affidavit is an employee of Vacation Store and the President of the Respondent, is the owner of pending trademark applications in the United States in class 43 for GRANBAHIAPRINCIPEPUNTACANA.COM, GRANBAHIAPRINCIPEAMBAR.COM, GRANBAHIAPRINCIPEBAVARO.COM filed on January 28, 2010 and GRANBAHIAPRINCIPEJAMAICA.COM filed on December 8, 2009.
The Complainant was successful in a previous administrative proceeding under the Policy against the same Respondent. InWIPO Case No. D2008-0774, the Complainant succeeded in obtaining orders for the transfer to it of the domain names , , and . The Respondent did not file a response inWIPO Case No. D2008-0774.
However, the Complainant was unsuccessful in a previous administrative proceeding under the Policy. InWIPO Case No. D2009-0608, the Complainant was denied the transfer of the domain name to it. The Respondent did file a response forWIPO Case No. D2009-0608. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
The Respondent has registered ten domain names which are confusingly similar to the trademark registered and used by the Complainant and its own name, BAHIA PRINCIPE except for the different geographic identifiers.
The Complainant clearly has an exclusive right to trade on the sign BAHIA PRINCIPE and use it on the Internet.
The Complainant had registered trademarks in the United States of America and Spain for BAHIA PRINCIPE CLUBS & RESORTS before the Respondent registered the disputed domain names.
Most of the Complainant's business is based on the use of the BAHIA PRINCIPE or GRANBAHIA PRINCIPE names. The hotels that incorporate “gran” in the title designate five star quality. The “gran bahia” hotels are best known within the public. The Respondent has registered the disputed domain names corresponding to the Complainant's best known hotels.
The disputed domain names are confusingly similar to the Complainant's trademarks.
The disputed domain names have been registered by the Respondent in bad faith only with the intention of obtaining an economic benefit by attracting confused users.
The websites at the disputed domain names offer the same services as the Complainant.
The websites at the disputed domain names are operated without the Complainant's consent.
The only intention of the Respondent is to:
- sell or assign the domain name to the Complainant or to its competitor;
- prevent the Complainant from owning the domain name;
- disrupt the business of the Complainant; and
- attract users of the Internet, creating a likelihood of confusion with the Complainant to earn click-through revenues. B. Respondent
The Respondent makes the following contentions:
The Respondent moves to strike the Complainant's claim for the disputed domain name because the Complainant's claim for this disputed domain name was previously denied,WIPO Case No. D2009-0608.
The Complainant authorized the Respondent to engage in a marketing plan whereby the Respondent would advertise the Complainant's properties and the Complainant would reimburse the Respondent for the expenses associated with the marketing plan.
The Respondent is the media division of a wholesale tour operator, Vacation Store, who provides tour operations and travel packages for travel to destinations outside the United States.
The Respondent, as Vacation Store and the Complainant have had a long standing business relationship including contracts that began in the early 2000s.
The websites at the disputed domain names divert substantial bookings to the Complainant. The Complainant has derived an economic benefit from the Respondent.
The Respondent has not tried to sell the disputed domain names.
The Respondent is authorized to use the Complainant's marks and logos on the web pages. The Respondent is an authorized agent of travel agencies Apple and GoGo Tours. Both Apple and GoGo Tours have contracts with the Complainant's hotels. The Respondent is authorized to resell the Complainant's rooms through the contracts with Apple and GoGo Tours. 6. Discussion and Findings A. Refiled case
The Complainant has refiled a second Complaint for the disputed domain name against the same Respondent. The Complainant's claim for this disputed domain name was previously denied,WIPO Case No. D2009-0608. A refiled case may only be accepted in limited circumstances (including where new actions have occurred since the original decision). The Complainant alleges that any commercial relationship that may have existed between the parties is now absolutely non-existent. The Complainant has supported this allegation with evidence in the form of a cease and desist letter of March 1, 2010 to which the Respondent allegedly did not reply. Although the filed Complaint could have been clearer with respect to directly addressing the issue of re-filing arising from the previous case of Levantur, S.A. v. Media Insight,WIPO Case No. D2010-0608, as well as to making its case why specifically it should be accepted, the Panel is nevertheless satisfied that, in the circumstances here, this evidence supports the re-filing of a second Complaint with respect to the disputed domain name . B. Paragraph 4(a) of the Policy
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied. C. Identical or Confusingly Similar
The Complainant has shown that it has trademark rights in the words BAHIA PRINCIPE CLUBS & RESORTS and BAHIA PRINCIPE RESIDENTIAL GOLF RESORT.
The Complainant's trademarks are not identical to the disputed domain names.
The words “bahia principe” form the dominant, distinctive part of the Complainant's mark and also form the dominant, distinctive part of the disputed domain names.
The word “gran” is used at the beginning of each of the disputed domain names. The word “gran” is simply Spanish for “big”. A geographical location appears to be used in each the disputed domain names following the words “gran baha principe”.
There is a strong likelihood that Internet users will confuse the disputed domain names with the Complainant's trademarks. The Panel is satisfied that the disputed domain names are confusingly similar to the disputed domain names.
The first element has been met for each of the disputed domain names. D. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is established, then the respondent then has the burden of demonstrating rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy lists three ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The circumstances listed in paragraph 4(c) are without limitation.
The Complainant alleges that it did not authorize the Respondent to register the disputed domain names. The Respondent did not respond to this allegation.
There is no suggestion that the Respondent is commonly known by the disputed domain names notwithstanding that it has recently applied to register trademarks corresponding to a selection of the disputed domain names.
The Respondent's use of the disputed domain names appear to be for a commercial use. The websites at the disputed domain names are for the bookings of accommodation. The websites at the disputed domain names also display the rates of hotels not owned by the Complainant and allow bookings for these hotels.
The Respondent not only used the Complainant's trademarks in the disputed domain names but also used the Complainant's trademarks at the websites at the disputed domain names. The use of the Complainant's trademarks in the disputed domain names and on the websites at the disputed domain names supports the Complainant's arguments that the Respondent registered and used the disputed domain names with the intent to attract for commercial gain confused Internet users to these websites. By using the Complainant's trademarks, the Respondent is falsely suggesting it is the trademark owner or the website is an official site for the Complainant when it is not. This is not a legitimate use: Houghton Mifflin Co. v. The Weathermen, Inc.,WIPO Case No. D2001-0211.
The foregoing factors are sufficient to establish a prima facie case. The evidentiary onus then shifts to the Respondent that it has a plausible case that it does have some rights or legitimate interests in respect of the disputed domain names. If a respondent satisfies that it does have a plausible case, then the complaint will usually fail because complex factual disputes are better dealt with by the courts.
The Respondent claims that the Complainant has authorized the Respondent to use the disputed domain names to advertise the Complainant's hotels and take bookings for the Complainant. The Respondent provided emails between employees of the Complainant and employees of the Respondent to support this claim. For a period of time, there appears to have been a commercial relationship between the parties. However, the Complainant alleges that any commercial relationship between the parties has been terminated.
In a cease-and-desist letter dated March 1, 2010 from the Complainant's lawyers to the Respondent, it is clear that any relationship between the Complainant and the Respondent for the Respondent to take bookings was terminated by the Complainant. The Respondent did not provide evidence that it responded to the Complainant's cease and desist letter.
The Respondent alleges that:
- it is an authorized agent of travel agencies Apple and GoGo Tours and that both Apple and GoGo Tours have contracts with the Complainant's hotels; and
- the Respondent is authorized to resell Complainant's rooms through the contracts with Apple and GoGo Tours.
The Respondent did not supply supporting evidence of any of these contractual arrangements.
A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The Panel visited the websites at the disputed domain names. The websites at the disputed domain names use the Complainant's trademarks. If an Internet user wishes to make a booking it is directed to a telephone number which is not the Complainant's telephone number. The website at “www.” clicks through to “”. This site advertises hotels that are competitors of the Complainant. For example, one of the statements on “” includes:
Welcome to Evacationtours, where we offer the best packages online to the best vacation spots in the world. Please take your time and browse through our site and choose the packages and destination that is right for you. We have something for everyone, from exclusive to budget. Your vacation is just a couple of clicks away.
The website at the disputed domain name clicks through to “”. This site advertises hotels that are competitors of the Complainant. For example, one of the statements on “” is:
Welcome to TravelQuotes, where we offer the best packages online to the best vacation spots in the world. Please take your time and browse through our site and choose the packages and destination that is right for you. We have something for everyone, from exclusive to budget. Your vacation is just a couple of clicks away.
The website at the disputed domain name asserts that it is the site for the Complainant's hotels by using the words on the entry page:
Welcome to the all-inclusive Gran Bahia Principe Jamaica !
Gran Bahia Principe Jamaica Guide. Your source for Gran Bahia Principe Jamaica hotel, Gran Bahia Principe Jamaica resort, Gran Bahia Principe Jamaica Bahia Principe Clubs & Resorts: we are one of the leading groups in the Spanish ... Gran Bahía Príncipe Tulum - Gran Bahía Príncipe Akumal - Gran Bahía Príncipe Coba – Gran Bahia Principe Ambar – Gran Bahia Principe Punta Cana – Gran Bahia Principe San Juan – Gran Bahia Principe La Romana – Gran Bahia Principe Bavaro – Gran Bahia Principe Jamaica
The websites at the disputed domain names are all very similar. The websites at the disputed domain names do not set out that the Respondent is an authorised reseller to book the Complainant's hotels.
The Panel is satisfied that there is no existing agreement in place for the Respondent to use the Complainant's registered trademarks. Even if there were an authorised reseller agreement in place, the Respondent's use of the disputed domain names does not seem to be legitimate because each website at the disputed domain names clicks through to booking services for hotels other than the Complainant. There also is no description of the relationship between the Complainant and the Respondent on the website.
The Panel finds that the second element has been met by the Complainant. E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(ii) of the Policy provides an example of the circumstances which shall be evidence of registration and use in bad faith.
The Complainant has distinctive trademarks. The Complainant alleges that it did not authorize the Respondent to register the disputed domain names and the Respondent did not respond to this allegation.
The websites at the disputed domain names indicate that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademarks.
While there may have been the appearance of a commercial arrangement between the Complainant and the Respondent to take bookings for the Complainant for a period of time, the Panel is satisfied that the Respondent is not authorized to use the Complainant's registered trademarks at the date the Complaint was filed. The Complainant's cease-and-desist letter of March 1, 2010 makes it clear than any commercial arrangement that did existing between the Complainant and the Respondent has ceased.
There are a number of cases under the Policy involving the Respondent with similar fact situations to this Complaint, see Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights,WIPO Case No. D2010-0211, BD Real Hoteles, SA de C.V v. Media Insights a/k/a Media Insight,WIPO Case No. D2009-0958, and Levantur, S.A v. Media Insight,WIPO Case No. D2008-0774. In those cases the relevant domain names were transferred to the Complainant. The Respondent had registered and used domain names incorporating trademarks of companies that own, operate or franchise hotels and resorts.
The number of domain names that the Respondent has registered containing the Complainant's trademarks gives rise to the inference that the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting their trademarks in the corresponding domain names, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113.
The Panel is satisfied that the Respondent's conduct amounts to bad faith registration and use of the disputed domain names.
The Panel finds that the third element has been met by the Complainant. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, , , , , , , , , , and be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: June 10, 2010
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